in the united states p t o b t p comcast cable ... · honorary societies: upsilon pi epsilon...

1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE _______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_______________

COMCAST CABLE COMMUNICATIONS, LLC Petitioner

v.

ROVI GUIDES, INC. Patent Owner

_______________

Patent No. 8,621,512 Filing Date: October 24, 2011

Issue Date: December 31, 2013

Title: INTERACTIVE TELEVISION PROGRAM GUIDE WITH SIMULTANEOUS WATCH AND RECORD CAPABILITIES

________________

Inter Partes Review No.: Unassigned ________________

DECLARATION OF VERNON THOMAS RHYNE, PH.D., P.E., R.P.A.

Comcast, Exhibit-1107

2

I, Vernon Thomas Rhyne, declare that I have personal knowledge of the

facts set forth in this declaration and, if called to testify as a witness, could and

would do so competently.

I. INTRODUCTION

1. I have been retained by Petitioner Comcast Cable Communications,

LLC, (“Petitioner”) to assess U.S. Patent No. 8,621,512 (“Ellis” hereafter) titled

“Interactive Television Program Guide with Simultaneous Watch and Record

Capabilities.”

2. I reside in Austin, Texas.

3. I have also been asked to provide my opinions regarding non-

interactive Electronic Program Guide Systems (“EPGs”) and Interactive Program

Guide Systems (“IPGs”) and the resolution of programming content conflicts as

related to Ellis, including providing an overview of the prosecution history of Ellis,

the disclosure of Ellis, the broadest reasonable interpretation of terms in the claims

of Ellis, and what constitutes a person of ordinary skill in the art with respect to

Ellis. Specifically, this Declaration provides my opinions regarding the

obviousness of Ellis over various combinations of the prior art. I am being

compensated for my time at a rate of $695 USD per hour, plus actual expenses. My

compensation is not dependent in any way upon the outcome of Petitioner’s IPR

petition.

3

II. PROFESSIONAL BACKGROUND AND QUALIFICATIONS

Education and Certifications

4. I received an undergraduate degree in Electrical Engineering from

Mississippi State University in 1962. I received a Master’s degree in Electrical

Engineering from the University of Virginia in 1964. I received a Doctorate in

Electrical Engineering from the Georgia Institute of Technology in 1967.

5. I am a registered professional engineer (“PE”) in Texas, No. 28,728,

and a registered patent agent, No. 45,041.

Career Synopsis

6. I am a retired Professor of Electrical/Computer Engineering at Texas

A&M University and a part-time engineering consultant. From 1967 to 1983 I was

a Professor of Electrical Engineering at Texas A&M University. From 1983

to 1995 I was employed at the Microelectronics and Computer Technology

Corporation (MCC) in Austin TX. There, I was responsible for MCC’s R&D

programs in neural network applications, data mining, software interface

standardization, and other advanced software development projects. From 1995

to 1997, I was employed at Motorola, Inc. in Austin, TX. I was the Manager of

Strategic Programs, Strategic Asset Group, Semiconductor Products Sector.

4

Career Milestones

7. The following is a list of some of my awards and honors: IEEE

Fellow (1990) for my “contributions to computer engineering and the computer

engineering profession;” IEEE Millennium Award (2000); Golden Core Award,

IEEE Computer Society (1996); and Fellow of the Accreditation Board for

Engineering and Technology (1992). I am also a member of the following

honorary societies: Upsilon Pi Epsilon (Computer Science), Eta Kappa Nu

(Electrical Engineering), Tau Beta Pi (Engineering), Phi Kappa Phi (Scholarship),

and Sigma Xi (Research). I have been a member of the Institute of Electrical and

Electronics Engineers since 1963, rising to the level of Life Member as of 2003.

Detailed Research Activity

8. During my engineering career, I participated in a number of research

programs which were directly related to the subject matter of the patent at issue in

this IPR.

9. I have extensive experience with computer technology, including

design and teaching experience with a variety of computer systems, microcomputer

systems, and microcontrollers. I have participated in the design of several

computer systems and microprocessors, and I have designed systems which made

use of those devices as controllers. I am familiar with a variety of computer

architectures, and I am an experienced programmer in a variety of programming

5

languages as well as assembly-level language on a number of different computers

and microprocessors.

10. I have conducted research on topics such as CAD systems, neural

network applications, data mining, software interface standardization, and other

advanced software development projects. I have written papers and given lectures

related to topics such as electronic design, digital systems design, communications

concepts, graphic symbols for logic devices, etc., and have supervised Masters-

level and Ph.D.-level engineering students, as well as postdoctoral associates. I

have served as a consultant to several companies and law firms regarding

intellectual property litigation from 1978 to the present. I have served as a Member

of the Panel on Assessment, Electrical and Electronics Engineering Laboratory,

U.S. National Institute for Standards and Technology, and as the Chair for nine

U.S. engineering program accreditation teams, including accreditation teams for

the University of California at Berkeley and the University of Illinois.

11. My detailed employment background, professional experience, and

list of technical papers and books are contained in my CV, attached as

Appendix A.

12. Prior to reviewing Ellis, I was well familiar with the type of subject

matter described and claimed in it. Ellis relates to an interactive television program

guide which allows a user to view program listings, to navigate through the

6

program listings, and to select a program to view or record from that listing. Ex.

1101, Abstract. In that regard, I have over ten years of experience with television

transmission systems, including the early use of the blanking interval for

transmitting data such as program descriptions, closed captions, parental-control

information as part of the broadcast television signal, IPGs and EPGs. I also have

had hands-on experience with a variety of set-top boxes including Scientific-

Atlanta’s Explorer® 2000 and 3000 and the 8600X set-top boxes (including

visiting the Scientific-Atlanta R&D facilities to meet with their engineers), the

Pioneer BD-V3000 set-top box, and the Cisco 8742HDC. I have also studied other

manufacturers’ set-top boxes and satellite receivers in the course of my consulting

practice. I have owned or rented several other set-top boxes in my home, and have

owned a Tivo digital video recorder since its introduction in 1999. I am also

familiar with the AT&T U-verse system for delivery of television programming

and electronic program guide.

13. I retired from full-time work as of 1997. In addition to the work

described above and in my CV (see Appendix A), I have worked part-time as a

consulting engineer for the past forty years doing computer systems design,

application-specific system design, and expert witness work in intellectual property

litigation.

7

14. I believe that my extensive academic and industrial experience well

qualify me as an expert in the fields of communications, control, and advanced

software applications of relevance to this Declaration, and particularly in IPGs and

the manner in which conflicts between viewing and recording programs can be

resolved in a set-top box. I am knowledgeable of the relevant skill set that would

have been possessed by a hypothetical person of ordinary skill in the art at the time

of the invention of Ellis in 1999.

III. MATERIALS REVIEWED

15. The analysis that I provide in this Declaration is based on my

education and experience in the fields of electrical and computer engineering, as

well as the documents I have considered, including Ellis (Ex. 1101), which claims

priority to Provisional Application No. 60/089,487 (“the ’487 Provisional” and

“Ex. 1102” herein) which was filed on June 16, 1998. I have also reviewed the file

wrapper for Ellis (Ex. 1103).

16. I have also reviewed various relevant publications from the time of

the alleged invention of Ellis. These publications are listed below:

Exhibit Description 1101 U.S. Patent No. 8,621,512 (“Ellis”) 1102 U.S. Prov. App. No. 60/089,487 (“the ’487 Provisional”) 1103 Prosecution History of U.S. Patent No. 8,621,512 1104 U.S. Patent No. 6,240,240 (“Nagano”) 1105 U.S. Patent No. 6,177,931 (“Alexander”) 1106 U.S. Patent No. 5,506,628 (“Chun”)

8

Exhibit Description 1107 Not used

1108 Modern Cable Television Technology (i.e., pp. 4, 9, 10, 747, 757-767, 778-779)

1109 U.S. Prov. App. No. 60/055,761 (“the ‘761 Provisional”)

IV. UNDERSTANDING OF APPLICABLE LEGAL STANDARDS

17. The following subsections provide my understanding of the legal

principles that I have relied upon in forming my opinions as set forth herein.

Person Having Ordinary Skill in the Art

18. It is my understanding that an assessment of the claims of Ellis must

be undertaken from the perspective of what would have been known or understood

by a person having ordinary skill in the art, upon reading Ellis on its relevant filing

date and in light of the specification and file history of that Patent. I refer to such a

person as a “PHOSITA” herein.

19. For the relevant priority date for Ellis, I have used June 11, 1999,

based on the filing date of the earliest non-provisional application that Ellis claims

priority to, Patent Application No, 09/329,850 (“the ’850 Application”), now

abandoned. Ex. 1101, 1:8-18.

20. In determining the appropriate level of ordinary skill in the art, I have

considered the following factors: (a) the types of problems encountered by those

working in the field and prior art solutions thereto; (b) the sophistication of the

9

technology in question, and the rapidity with which innovations occur in the

field; and (c) the educational level of active workers in the field as of 1999.

21. I have been asked to provide my opinion as to the state of the art in

the field of IPGs, television video signal processing and recording, graphical user

interfaces, and related computer software around 1999, including the knowledge to

be expected of a PHOSITA, the manner in which a PHOSITA would have

understood the claims of Ellis, the manner in which a PHOSITA would have

understood the prior art, or what a PHOSITA would have been led to do based on

the prior art. Similarly, when discussing the disclosures of the prior art and/or the

claims of Ellis, I address those topics as they would have been viewed by a

PHOSITA in the 1999 timeframe.

22. Based on my consideration of the factors listed in ¶¶ 20-21 above, in

my opinion a person of ordinary skill in the art related to Ellis in the 1999

timeframe would have had at least a bachelor’s degree in computer science,

electrical engineering, computer engineering, or a similar discipline, and two to

three years’ experience or familiarity with EPGs, television video signal

processing, graphical user interfaces, and associated computer software, or would

have had equivalent experience either in industry or research, such as designing,

developing, evaluating, testing, or implementing the aforementioned technologies.

10

23. I also understand that U.S. law provides categories of information that

constitute prior art that may be used to anticipate or render obvious patent claims.

To be prior art to a particular patent claim under the relevant law, I understand that

in general a reference must have been made, known, used, published, or patented,

or be the subject of a patent application by another, before the priority date of the

patent, and in this matter, must satisfy one of the standards of pre-AIA 35

U.S.C. § 102. I also understand that a PHOSITA is presumed to have full

knowledge of the relevant prior art.

Obviousness

24. I also understand that a proper analysis of whether an invention is

invalidated for obviousness includes a review of the scope and content of the prior

art, the differences between the patent claims and the prior art, and the level of skill

in the pertinent art at the time of the invention.

25. I also understand that in determining obviousness I should take into

account the knowledge, experience, and creativity of a person of ordinary skill in

the art at the time of the alleged invention, and whether such a skilled artisan

would have found the challenged claims to be a “predictable use of prior-art

elements according to their established functions,” as described by the U.S.

Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007), and

therefore obvious in view of the prior art.

11

26. I also understand that a claim may be invalidated for obviousness if

there is a teaching or suggestion to combine prior art references in a manner that

yields the claimed invention. I understand that a showing of obviousness requires

some articulated reasoning with a rational underpinning to support the combination

of the references. I understand that in consideration of this issue it is important to

identify whether a reason existed at the time of the invention that would have led a

person of ordinary skill in the pertinent art to combine elements of the references

in a way that yields the claimed invention.

27. I also understand that various objective or “real world” factors may be

indicative of non-obviousness. I understand that such factors include:

(A) The commercial success of the claimed invention;

(B) The existence of a long-felt, unresolved need for a solution to the

problem solved by the claimed invention;

(C) Failed attempts to solve the problem solved by the claimed invention;

(D) Copying of the claimed invention;

(E) Unexpected results of the claimed invention;

(F) Praise for the claimed invention by others in the relevant field; and

(G) Willingness of others to accept a license under the patent because of the

merits of the claimed invention.

12

Use of the Broadest Reasonable Interpretation

28. I also understand that, in an inter partes review proceeding, the patent

claims at issue are given their broadest reasonable interpretation in light of the

specification of the patent, unless otherwise noted. I also understand that claim

terms which are not expressly defined in the patent are to be given their plain and

ordinary meaning as would be understood by one of ordinary skill in the art in

view of the patent specification, other intrinsic evidence, and extrinsic evidence.

As explained below, I have used those understandings in forming the opinions set

forth in this Declaration.

V. THE STATE OF THE ART RELATIVE TO ELLIS

The Prior Art of Program Guides

29. Ellis discloses and claims a conflict resolution system providing an

IPG which a user can use to select a television program to watch while also

selecting another program that can be recorded at the same time. Ex. 1101,

Abstract; claim 13. The Ellis Abstract also explains that such a system can be

implemented by a set-top box with a single tuner or with a set-top box having

multiple tuners. The Ellis system allegedly determines that if a conflict exists for a

recording, viewing, or other function, the system alerts the user and provides the

user with the opportunity to cancel the conflict with the IPG. Ex. 1101, claim 1.

13

30. Of note here, however, is the fact that of the 1999 filing date of Ellis,

there were a number of IPG-based systems which supported the simultaneous

watching and recording of television programs, with a number of companies and

individuals developing and publicizing approaches to creating such systems as a

way for a television viewer to identify programs of interest for either (or both)

viewing and recording. A significant contributor to these developments was the

transition by many television viewers from broadcast television received with the

then-familiar TV antennas, to the delivery of television programming and other

services through coaxial cables, which were brought to the users’ homes. Whereas

over-the-air delivery of television programming was limited to a small number of

channels in most markets, the transition to cable delivery provided an opportunity

to deliver many more channels of general and special-interest programming.

31. As of the early-to-middle 1990s, cable television systems and their

larger number of available channels were proliferating across the U.S. For

example, a seminal book in the field—Modern Cable Television Technology by

Walt Ciciora, James Farmer, and David Large1—on page 4 (Ex. 1108 at 3) notes

that around that time cable television service was supplied to nearly 65 million

1 Morgan Kaufmann Publishers, Inc., San Francisco, CA, 1999. (Ex. 1108).

14

U.S. households, corresponding to a market penetration of nearly 67%. As a result,

cable television service was available to 96.7 % of U.S. television households.

32. To inform users about the various television programs that were

available from their cable service, early cable systems provided a dedicated

channel showing a scrolling display of the names of those programs, a brief

description of the program and what time the programs were going to be aired. The

data slowly displayed on a rolling basis, and the user could not increase the speed

of the display. Those displays were the original EPGs; they were not interactive.

An example of such a non-interactive EPG is shown below2:

2 Excerpt from Wikipedia, Electronic program guide,

https://en.wikipedia.org/wiki/Electronic_program_guide (as of Dec. 15, 2016).

15

33. A more modern form of the EPG is the interactive [electronic]

program guide (the “IPG,” though often loosely referred to as an EPG). An IPG

allows television viewers to navigate scheduling menus interactively, selecting and

discovering programming by time, title, channel or genre by using an input device

such as a television remote control. The interactive menus are generated entirely

within local receiving or display equipment using raw scheduling data sent by

individual broadcast stations or centralized scheduling information providers.

Today, a typical IPG provides user selectable information covering a span of one

or two weeks.

34. On pages 9 and 10 (Ex. 1108 at 4-5), Modern Cable Television

Technology also explains that with cable television, one of the major parts of that

system is “the terminal equipment (set top terminals and consumer electronics

hardware).” Given those terminals (also called “set-top boxes” or “STBs”),

Modern Cable Television Technology goes on to explain that most set-top boxes

available in the mid to late 1990s provided an on-screen display which allowed the

user to select channels to watch and/or record through the use of an EPG. Ex. 1108

at 7.

35. That book also noted that EPGs were being built into television

systems and STBs, and that some of the STBs also provided IR LEDs which could

be used to control a separate video recorded. Ex. 1108 at 7.

16

36. Further, Chapter 19 of Modern Cable Television Technology describes

a number of different ways of connecting the coaxial cable supplying television

programming to a home with TVs, VCRs, and STBs based on a 1987 report from

the National Cable & Television Association’s3 Engineering Committee. One

approach described in § 19.3.1 of Modern Cable Television Technology allows the

user to “watch one unscrambled channel while recording a different unscrambled

channel.” Ex. 1108 at 10. An alternate approach described in § 19.3.3 of Modern

Cable Television Technology uses two STBs, each with its own tuner, to supply

programming to a VCR and a television set which allows a user to “watch any

authorized scrambled or unscrambled program” and to “record any (other or the

same) authorized scrambled or unscrambled program.” Ex. 1108 at 12.

37. The original function of STBs, also referred to as “converter boxes” in

the early 1990s,4 was simply to select one of the many incoming channels so that it

could be watched on a TV set. The incoming channel was tuned to and then

converted to a specific channel (often channel 3 or 4) for output to the associated

television set or recorder, those end devices being tuned to receive programming

3 Currently known as the Internet & Television Association.

4 See the Cable Television Consumer Protection and Competition Act of 1992,

Public Law 102-383-OCT. 5, 1992.

17

on that fixed channel. This basic capability was soon enhanced, however, to allow

the STB to be controlled using a hand-held infrared controller. Later, more

sophisticated set-top boxes were introduced by companies like Scientific-Atlanta

and Cisco. Those STBs contained enough memory and graphics resources to allow

them to accept downloaded features providing enhanced capabilities including an

on-screen display, volume control, virtual text channels, a sleep timer, parental

locks, reminder messages, and multi-lingual displays.5

38. As STB capabilities expanded, EPGs such as those described in

Modern Cable Television Technology became a common feature of those in-home

devices. As an example, as early as 1997, Alexander (Ex. 1105, discussed in detail

below) describes a multi-tuner system that uses an IPG that provides a listing of

available programs and allows a user to select a program for viewing or recording

from the IPG. Ex. 1105, 6:1-55. I note that although Alexander specifically

describes its program guide as an “EPG,” in my opinion a PHOSITA would have

understood that the “EPG” of Alexander is, in fact, an IPG since it provides an on-

screen display that presents PIP and other information to the user and is also

interactively responsive to user inputs. Ex. 1105, 6:1-55; 14:34-41. I thus refer to

5 See http://blogs.cisco.com/sp/a_brief_history_of_set-top_box_innovation (last

accessed on October 26, 2016).

18

the EPG of Alexander as an IPG throughout this Declaration. Ex. 1105, 14:34-41.

Similarly, Chun (Ex. 1106, also discussed below) describes a menu-driven

program selection system for use in a two-tuner television receiver. Ex. 1106,

Abstract.

39. By 1998, therefore, in my opinion a PHOSITA would have known

many of the features of the purported invention claimed by Ellis to be well known.

Overview Of Ellis

40. As I noted above, Ellis relates to a conflict resolution system using an

interactive program guide that allow a user to view program listings, to navigate

through the program listings, to select a program to view or record, and to resolve

any conflicts which may arise when they make a selection. Ex. 1101, Abstract;

claim 13. Ellis also discloses that the IPG can be implemented on a receiver with

multiple tuners or on a VCR and television by using an RF bypass switch.

Ex. 1101, 1:42-47; 1:57-2:9; Fig. 12. Ellis also explains that when providing “a

full-featured interactive program guide, it is typically necessary to use several

different screens, each screen being associated with one or more features of the

system.” Ex. 1101, 3:19-22; 5:49-51; FIGS. 3-10 (depicting “sample screen

displays which illustrate the operation of the interactive program guide of the

present invention”).

19

41. Ellis also discloses that IPGs are typically implemented on STBs

(Ex. 1101, 1:26-27), and that having a set-top box which provides an IPG allows

users to view a listing of viewable television programs, to select a program for

viewing, and in some cases, to select a program to be recorded. Ex. 1101, 1:27-30.

Given those capabilities, Ellis identifies as a “significant disadvantage” the alleged

fact that the available IPGs are provided by STBs that contain only one tuner,

though admitting that STBs containing two tuners had been proposed. Ex. 1101,

1:35-38. Given a one-tuner STB, therefore, Ellis opines that if the user has

assigned that tuner to a program being recorded, the user will be unable to watch a

second program while that recording is taking place. Ex. 1101, 1:38-41.

Accordingly, Ellis proposes to provide a “more sophisticated program guide” that

operates with a multi-tuner STB. Ex. 1101, 1:42-43.

42. To implement such a conflict-free IPG system, Ellis discloses an STB

having more than one tuner and states that the “arrangement of FIG. 2(b) allows

the interactive television program guide to allocate whichever tuner is not currently

busy for recording a selected program when that program is about to begin.”

Ex. 1101, 7:55-58; Fig. 2(b).

43. Having such a system, Ellis also discloses that even when a program

is being recorded by using one tuner within a two-tuner STB, a user can still use

the IPG to select a different program for viewing. In so doing, the IPG system uses

20

the second tuner to provide that second program to a television set for viewing.

Ex. 1101, 8:19-23. Ellis also discloses a system that includes multiple tuners that

are capable of allowing a user to view or record a program, and various “secondary

tuner functions” such as allowing the user to utilize a picture-in-picture (“PIP”)

function. Ex. 1101, 1:55-2:5. Further, with regard to possible conflicts, Ellis

discloses with respect to the highlighted flowchart of Figure 3(b) (below) that a

user can choose to cancel a tuner function currently in progress to switch the tuner

to a different requested function, or, alternatively, the user may cancel the

requested function, thereby continuing the current tuner function. Ex. 1101, Fig.

3(b). I also note that in the alternate embodiment shown in Fig. 12 of Ex. 1101, the

end user may perform these functions by using a set-top box connected to a VCR,

a television, and an RF bypass switch. As I explain below, however, the use of IPG

systems which could resolve such tuner conflicts was well known in the prior art as

of 1999.

21

The Priority Date and the Prosecution History

44. I have reviewed the prosecution file history of Ellis. U.S. Application

No. 13/280,215 was filed on October 24, 2011 (Ex. 1103). That application was

the fifth of a series of applications claiming priority to the ’487 Provisional

(Ex. 1102). However, based on my study of it, it is my opinion that Ellis is not

entitled to the filing date of the ’487 Provisional. I base that opinion on my

understanding that in order to properly support a later-filed application, a

22

provisional application must contain a written description of the claimed invention

such that a PHOSITA would believe that, as of the priority date sought, the

applicant was in possession of the invention that is later claimed, and that such a

written description must actually or inherently disclose each and every element of

the later-allowed claims. Clearly, that requirement is also not satisfied by the ’487

Provisional.

45. To the contrary, the ’487 Provisional consisted of only a two-page

write-up that lacked any drawings or flowcharts. Further, the ’487 Provisional did

not provide any implementation details, did not provide a complete written

description of the various features set forth in the later-filed application for Ellis,

and did not provide an enabling disclosure that would allow a PHOSITA to

practice any of the alleged inventions set forth in those later claims. Ex. 1102 at 5

and 6. More specifically, the brief discussion found in the two-page ’487

Provisional fails to disclose those skilled in the art how to make and use the full

scope of the later-allowed Ellis claims without undue experimentation, and lacking

that disclosure, those claims fail to bear a reasonable correlation to the limited

disclosure found in that Provisional.

46. Due to the shortcomings discussed above, it is my opinion that Ellis is

not entitled to the priority date of the ’487 Provisional, but rather only the June 11,

23

1999 date of the later-filed ’850 Application, now abandoned. Ellis is a

continuation of the ’850 Application. Ex. 1101, 1:8-18.

VI. SUMMARY OF THE PRIOR ART

The Combinations of Prior Art

47. I address herein the unpatentability of claims 1-24 of Ellis on the

grounds set forth in the table below.

Ground Claims of Ellis Basis for Unpatentability

1 1-24 Obviousness under 35 U.S.C. 103(a) over Nagano in view of Alexander

2 1-24 Obviousness under 35 U.S.C. 103(a) over Nagano in view of Chun

Nagano

48. Nagano is directed toward an apparatus and a method of “controlling

the recording of television programs” and “[i]f any of the reserved programs

overlap, the apparatus allows the starting time and/or ending time of any of the

overlapped programs to be changed.” Ex. 1104, Abstract. Nagano discloses an IPG

system that includes channel and program data with program categories and an on-

screen display of an IPG that allows the users to select a program for viewing or

recording. Ex. 1104 at 1:25-38 and Fig. 9A. I note that while Nagano specifically

describes its program guide as an “EPG,” in my opinion a PHOSITA would have

understood that the “EPG” of Nagano is, in fact, an IPG since it provides an on-

screen display that presents programming information to the user and is also

24

interactively responsive to user inputs. Ex. 1104 at 1:25-38 and Fig. 9A. I thus

refer to the EPG of Nagano as an IPG throughout this Declaration. For reference,

Nagano’s Fig. 9A is copied below, showing an IPG that includes channel

identifiers, programs, and program times:

49. Nagano also discloses that the apparatus includes a single tuner and a

remote control and that a “user selects a preferred program on the channel and

watches the program on a TV set or records the program on a picture recorder.”

Ex. 1104, Fig. 1; 1:15-17.

50. Nagano discloses that the system can collect IPG data. Ex. 1104, 6:34-

37. At Ex. 1104, 8:23-33, Nagano also discloses that the IPG shows programming

for all available channels by allowing scrolling of the EPG when the number of

channels exceeds the display capacity of that guide. Nagano also discloses that the

user can move a cursor across the IPG to select a program for recording, with the

25

image of that program being changed to show where the cursor is positioned. Ex.

1104, 8:27-30.

51. Further, Nagano discloses that the apparatus can perform conflict

resolution, stating that “[i]f any of the reserved programs overlap, the apparatus

allows the starting time and/or ending time of any of the overlapped programs to

be changed.” Ex. 1104, Abstract. In other words, Nagano discloses that if a user

reserves a program for recording with the IPG and that program overlaps with

another scheduled recording, the Nagano system determines that the programming

overlaps and there is a conflict. Ex. 1104, 2:10-17.

52. Ex. As shown below in Figs. 17B and 17E (copied below), Nagano

also discloses that the “electronic appliance is provided with a display means for

displaying the picture recording reservation information of the overlapped program

reserved for picture recording.” Ex. 1104 at 4:36-38. The “?” displayed in Fig. 17B

indicates to the user that the movie they have selected for recording overlaps with

the recording of the previously scheduled news program as shown in Fig. 17E.

26

53. A PHOSITA would thus realize that Nagano discloses a method of

correcting tuner conflicts between user selections. For example, at Ex. 1104, 5:6-

13 Nagano discloses that when programs which have been selected for recording

by using his IPG happen to overlap in time, the overlapped reserved programs are

displayed to the user, allowing them to change the starting time or ending time for

the selected program or, alternatively, to cancel one of the overlapping operations.

54. Nagano also discloses that the user can resolve the identified conflicts

“by operating the cursor moving keys to cancel the picture recording reservation,

expedit[ing] the ending time of the picture recording reservation, or delay[ing] the

picture recording starting time.” Ex. 1104, 11:44-51.

Alexander

55. Alexander discloses a system and method for improved IPGs and

improved user control of program video recording. Ex. 1105 Abstract. Alexander

also discloses several EPG improvements, including a PIP capability,

programming content conflict resolution, and viewer access to the Internet. Ex.

1105, 6:1-32.

56. Alexander also discloses that its system includes both a first and

second tuner. Ex. 1105, 14:37-41. Alexander also discloses that the “viewer

instructs the EPG what programs to add to the Record List, which is the list of

27

programs and related programming schedule information, for programs that the

viewer want to have recorded.” Ex. 1105, 7:59-62.

57. Alexander also discloses that the “EPG’s Record Function recognizes

conflicts in viewer record instructions” and “prompts the viewer to resolve the

conflict.” Ex. 1105, 12:53-55. Alexander also discloses that if a user schedules a

new recording, “[t]he EPG compares the newly received record instructions to as-

yet incompletely executed, or as yet unexecuted, record instructions” to determine

if a conflict exists. Ex. 1105, 12:57-60.

58. Alexander also discloses that if a conflict is detected, “the EPG

formats a message to the viewer describing the conflict.” Ex. 1105, 12:60-64. As a

result, Alexander explains that the viewer must “revise the record instructions to

eliminate the conflict.” Ex. 1105, 13:2-3. Alexander also discloses that when a

“one occurrence program” conflicts with a “regularly recorded program,”6 the user

can use the EPG to select the “one occurrence program to be recorded” to

eliminate the conflict. Ex. 1105, 13:3-8; Figs. 5 and 6. In my opinion, therefore, a

PHOSITA would realize that if the user chooses to record the “one occurrence”

6 Scheduling the regular recording of a multi-episode television program is

commonly referred to as “recording a series.”

28

program when the IPG identifies such a conflict, the recordings of the other

program(s) scheduled at the same time are cancelled.

59. Alexander also discloses IPG-selectable tuner functions such as

viewing and recording television programming, as well as advanced secondary

tuner functions such as PIP, Internet access, and collecting EPG data. Ex. 1105,

6:1; 6:32-33; 6:64-66; 7:15-17; 7:57-62; 8:18-31.

Chun

60. Chun discloses a self-contained, multi-tuner system with a picture-in-

picture (PIP) function that can be implemented on either tuner. Ex. 1106, Abstract;

2:37-38. Further, at 5:36-41, Chun explicitly discloses that a PIP function improves

“the convenience and reliability of channel selection so that a user may easily

select channels through a menu-based selection.” Ex. 1106, 5:36-41.

VII. CLAIM CONSTRUCTION

61. In making this Declaration, I have been asked to review the terms

found in the Ellis claims to determine what a person of ordinary skill in the art

would understand those terms to have meant at the time of the alleged invention.

As discussed above, Ellis describes and claims “[a]n interactive television program

guide system is provided in which a user may use the program guide to watch one

program while simultaneously recording another program without interrupting the

recording or viewing process.” Ex. 1101, Abstract.

29

62. I understand that the patentability of each claim of Ellis must be

evaluated individually on its merits, and I have done so below in Sections VIII

and IX.

63. Independent claim 1 of Ellis is a method claim with claims 2-12

depending from it. Independent claim 13 of Ellis is a system claim and claims 14-

24 depend from it. Aside from the fact that claim 1 is directed to a method and

claim 13 is directed to a system, to my reading those two sets of claims (i.e., claims

2-12 and claims 14-24) essentially correspond to one another as is illustrated in the

following table which compares the wording of those two parallel sets of claims. I

note, however, that in contrast to independent claim 13, the receiving and

determining steps of independent claim 1 are not required to be implemented by an

IPG since the receiving and determining steps do not require an IPG. Accordingly,

in my opinion the validity of claims 13-24 can be addressed together with the

validity of claims 1-12.

The Ellis Method Claims The Corresponding System Claims

1. A method for resolving a conflict when multiple operations are performed using multiple tuners controlled by an interactive television program guide, the method comprising:

13. A system for resolving a conflict when multiple operations are performed using multiple tuners controlled by an interactive television program guide, the system comprising:

a first tuner;

a second tuner; and

an interactive television program

30


receiving a request to perform a tuning operation;

determining that neither a first tuner nor a second tuner are available to perform the requested tuning operation, wherein the first tuner and the second tuner are both capable of performing the tuning operation; and

in response to the determination, displaying an alert that provides a user with an opportunity to direct the interactive television program guide to cancel a function of the second tuner to permit the second tuner to perform the requested tuning operation.

guide implemented on the system, wherein the interactive television program guide is operative to:

receive a request to perform a tuning operation;

determine that neither the first tuner nor the second tuner is available to perform the requested tuning operation, wherein the first tuner and the second tuner are both capable of performing the tuning operation; and

in response to the determination, display an alert that provides a user with an opportunity to direct the interactive television program guide to cancel a function of the second tuner to permit the second tuner to perform the requested tuning operation.

2. The method of claim 1 further comprising:

receiving a user selection to not cancel the function of the second tuner; and

in response to the user selection to not cancel the function of the second tuner, continuing to perform the function of the second tuner.

14. The system of claim 13 wherein the interactive television program guide is further operative to:

receive a user selection to not cancel the function of the second tuner; and

in response to the user selection to not cancel the function of the second tuner, continue to perform the function of the second tuner.

31


3. The method of claim 1 further comprising:

receiving a user selection to cancel the function of the second tuner; and

in response to the user selection to cancel the function of the second tuner, canceling the function of the second tuner and performing the requested tuning operation.

15. The system of claim 13 wherein the interactive television program guide is further operative to:

receive a user selection to cancel the function of the second tuner; and

in response to the user selection to cancel the function of the second tuner, cancel the function of the second tuner and perform the requested tuning operation.

4. The method of claim 1 wherein the requested tuning operation, the function of the second tuner, and a function of the first tuner each comprises a tuning function selected from the group consisting of viewing television programming, recording television programming, and performing a secondary tuner function.

16. The system of claim 13 wherein the requested tuning operation, the function of the second tuner, and a function of the first tuner each comprises a tuning function selected from the group consisting of viewing television programming, recording television programming, and performing a secondary tuner function.

5. The method of claim 4 wherein the secondary tuner function comprises a tuning function selected from the group consisting of providing a picture-in-picture signal, collecting program guide data, browsing the Internet, and playing a music channel.

17. The system of claim 16 wherein the secondary tuner function comprises a tuning function selected from the group consisting of providing a picture-in-picture signal, collecting program guide data, browsing the Internet, and playing a music channel.

32


6. The method of claim 1 wherein a function of the first tuner is viewing a first television program, the function of the second tuner is performing a secondary tuner function, and the requested tuning operation is recording a second television program.

18. The system of claim 13 wherein a function of the first tuner is viewing a first television program, the function of the second tuner is performing a secondary tuner function, and the requested tuning operation is recording a second television program.

7. The method of claim 1 wherein a function of the first tuner is viewing a first television program, the function of the second tuner is recording a second television program, and the requested tuning operation is performing a secondary tuner function.

19. The system of claim 13 wherein a function of the first tuner is viewing a first television program, the function of the second tuner is recording a second television program, and the requested tuning operation is performing a secondary tuner function.

8. The method of claim 1 wherein a function of the first tuner is viewing a first television program, the function of the second tuner is recording a second television program, and the requested tuning operation is viewing a third television program.

20. The system of claim 13 wherein a function of the first tuner is viewing a first television program, the function of the second tuner is recording a second television program, and the requested tuning operation is viewing a third television program.

9. The method of claim 1 wherein the alert provides the user with the opportunity to direct the interactive television program guide to cancel the function of the second tuner when the function of the second tuner is viewing a television program, and provides the user with the opportunity to direct the interactive television program guide to cancel a function of the first tuner when the function of the first tuner is viewing the television program.

21. The system of claim 13 wherein the alert provides the user with the opportunity to direct the interactive television program guide to cancel the function of the second tuner when the function of the second tuner is viewing a television program, and provides the user with the opportunity to direct the interactive television program guide to cancel a function of the first tuner when the function of the first tuner is viewing the television program.

33


10. The method of claim 1 wherein the displaying the alert comprises displaying a display screen using the interactive television program guide that provides the user with a first option to continue to perform the function of the second tuner, and with a second option to cancel the function of the second tuner to perform the requested tuning operation.

22. The system of claim 13 wherein the displaying the alert comprises displaying a display screen using the interactive television program guide that provides the user with a first option to continue to perform the function of the second tuner, and with a second option to cancel the function of the second tuner to perform the requested tuning operation.

11. The method of claim 1 wherein the user selects to cancel the function of the second tuner to permit the second tuner to perform the requested tuning operation using a remote control.

23. The system of claim 13 wherein the user selects to cancel the function of the second tuner to permit the second tuner to perform the requested tuning operation using a remote control.

12. The method of claim 1 wherein the first tuner and the second tuner are included in a single device.

24. The system of claim 13 wherein the first tuner and the second tuner are included in a single device.

VIII. GROUND 1 - NAGANO IN VIEW OF ALEXANDER RENDER OBVIOUS CLAIMS 1-24 OF ELLIS

64. I have compared claims 1-24 Ellis to the disclosures of Nagano and

Alexander. Based on that comparison, it is my opinion that Nagano in combination

with Alexander discloses each and every limitation of claims 1-24. I explain that

opinion on a limitation-by-limitation basis below.

Claims 1 and 13

65. The preambles of claims 1 and 13 read as:

34

A method/system for resolving a conflict when multiple operations are

performed using multiple tuners controlled by an interactive television

program guide, the method/system comprising:

66. It is my opinion that under the broadest reasonable interpretation,

these preambles are not construed to be limitations on claims 1 or 13 because the

preambles do not provide an antecedent basis for any claim elements and the

preambles are merely statements of intended use. It is also my opinion that the

preambles of claims 1 and 13 are not limiting because the bodies of claims 1 and

13 each describe a structurally complete invention and deletion of the preambles

would not affect the structure or steps of the claimed inventions. Although Nagano

only discloses a television system having a single tuner, at Ex. 1104, 6:28-29,

Alexander discloses a first television tuner and the various IPG Windows and IPG

features on the face of the television monitor, while the television monitor

continues to receive a second video signal of a second television channel tuned by

a second television tuner. Ex. 1105, 14:35-41. In addition, I note that Alexander

states that the “invention allows the television viewer to manipulate the PIP …

with a first tuner …. while [receiving] a second television channel tuned by a

second television tuner.” Ex. 1105, 14:35-41. In my opinion, therefore, it would

have been obvious to a PHOSITA to modify the single-tuner method and system of

35

Nagano with the IPG and two-tuner system taught by Alexander to improve and

simplify a user’s control over the increased programming content.

67. Claim 13 further requires:

a first tuner;

68. Nagano’s Figure 1, as noted above, discloses a single tuner system.


a second tuner; and

70. As I explained above, Alexander discloses a system with two tuners

and in my opinion it would have been obvious to a PHOSITA to modify the single-

tuner system of Nagano with the two-tuner system taught by Alexander to increase

the control capabilities and content available to a viewer.


an interactive television program guide implemented on the system,

wherein the interactive television program guide is operative to:

72. Nagano at Ex. 1104, 1:34-38 and Figure 9A discloses an IPG that

“can be displayed on a screen for individual categories of program … and on the

display of the electronic program guide on a screen, a user can select a program for

receiving and can reserve for recording of a program.” Based on this, it is my

opinion that an IPG is implemented by the Nagano system.

73. Claims 1 and 13 of Ellis further require:

36

receiving/receive a request to perform a tuning operation;

74. It is my opinion, under the broadest reasonable interpretation, that the

preamble is not limiting and this element of claim 1 does not require an IPG. I

note, however, that Nagano discloses that “the electronic program guide can be

displayed on a screen for individual categories of program such as sports, news,

and movies, and on the display of the electronic program guide on a screen, a user

can select a program for receiving and can reserve for recording of a program.”

Ex. 1104, 1:33-38 (emphasis added). Based on this, it is my opinion that Nagano’s

system can receive a user request to perform a tuning operation, such as recording

or viewing, with the IPG.

75. Claims 1 and 13 further require:

determining/determine that neither a first tuner nor a second tuner are/is

available to perform the requested tuning operation, wherein the first tuner

and the second tuner are both capable of performing the tuning operation;

76. Nagano discloses an apparatus and a method for “controlling the

recording of television programs” such that this system determines “[i]f any of the

reserved programs overlap, the apparatus allows the starting time and/or ending

time of any of the overlapped programs to be changed.” Ex. 1104, Abstract.

77. As I noted above, the preamble in claim 1 is not limiting and this

claim limitation does not require an IPG. It is my opinion, however, that a

PHOSITA would understand that Nagano teaches that the IPG can determine if a

37

tuner is available to perform a function. For example, at Ex. 1104, 2:10-17,

Nagano explains that the IPG is used to schedule the recording of a program (a

“reservation”), if that program overlaps the recording of a previously scheduled

program, the Nagano system rejects scheduling the new recording. Ex. 1104, 2:10-

17. As an alternate approach, at Ex. 1105, 12:53-55, Alexander discloses that the

“EPG’s Record Function recognizes conflicts in viewer recording instructions” and

“prompts the viewer to resolve the conflict.” Based on this, it is my opinion that it

would have been obvious to a PHOSITA to modify Nagano with Alexander’s user-

selected conflict-resolution approach and two-tuner system to simplify a user’s

ability to control programming content conflicts with multiple tuners.

78. I note that during prosecution, Ellis asserted that the prior art only

disclosed “conflicts associated with timers for different programs.” Ex. 1103 at 89.

In so doing, Ellis argued that “checking for such timer related conflicts does not

include determining that neither the first nor the second tuner are available to

perform the requested tuning operation.” Ex. 1103 at 90. While I do not agree with

that assertion, the argument certainly does not apply to Nagano. Nagano expressly

states that an alert is provided when the tuner is not capable of recording

overlapping requests and the user may change any scheduled recording. Ex. 1104,

Abstract; 5:6-12. In addition, Nagano describes overlapping recordings (i.e., a

38

tuner conflict) which reasonably applies to the present or future, as Nagano makes

no distinction as to when a user can “set” a recording request.


and in response to the determination, displaying an alert that provides

a user with an opportunity to direct the interactive television program

guide to cancel a function of the second tuner to permit the second

tuner to perform the requested tuning operation.

80. Nagano discloses that when programs reserved for recoding overlap, a

display is provided for the user and the user may correct the scheduled recording

start or end time, or the user may cancel the scheduled recording. Ex. 1104, 5:6-12.

Also see Nagano’s disclosure of the use of the IPG to select a program for

recording as shown in ¶ 48 above. In accordance with that disclosure, annotated

versions of Nagano’s Figs. 17A and 17B are shown below, demonstrating how the

background of an entry within Nagano’s IPG changes from red to yellow on

overlapping programs to alert the user.

39

81. Nagano also discloses that the user may cancel or delay any of the

scheduled recordings. For example, at Ex. 1104, 11:44-51 and Figure 17E, Nagano

explains that with his system, when a scheduling overlap arises, that overlap is

displayed as shown in his FIG. 17(e), thereby allowing the user to confirm the list

of the overlapped programs. The user can then eliminate the overlap by operating

the cursor moving keys to cancel one of his or her scheduled recordings, to modify

the ending time of one of the scheduled recordings, or to delay the starting time of

one of those recordings. See Ex. 1104, Abstract. In other words, the user may

cancel a previously scheduled recording or a new scheduled recording.

82. Further, Alexander discloses that “the EPG formats a message to the

viewer describing the conflict” and the “EPG will require that the viewer revise the

record instructions to eliminate the conflict.” Ex. 1105, 12:63-13:3.

83. Thus, in my opinion it would have been obvious to a PHOSITA to

modify the IPG enabled conflict-resolution method and system of Nagano with the

multiple-tuner method and system of Alexander to provide a user a simplified

capability to correct programming conflicts, such as canceling a requested tuner

function. Given the nature of those conflict-resolution systems, in my opinion a

PHOSITA would have thus found claims 1 and 13 to be only a predictable use of

prior art elements according to their established functions. Further, in my opinion

a PHOSITA would have found performing functions such as determining a

40

conflict, providing an alert, and canceling a tuner function for a second tuner to be

obvious in view of Nagano’s teachings for performing such functions with a single

(i.e. first) tuner. Applying such techniques to a second tuner would yield

predictable results.

84. Given the disclosures identified above, it is my opinion that Nagano in

view of Alexander invalidates claims 1 and 13 of Ellis through obviousness.

Claims 2 and 14

85. I explained above my opinion that Nagano in view of Alexander

discloses all of the limitations of independent claims 1 and 13 of Ellis. Further, as I

explain below, in my opinion Nagano in view of Alexander also discloses a

method and system having all of the limitations of claims 2 and 14 of Ellis.

86. Claims 2 and 14 depend from claims 1 and 13 and further require:

receiving a user selection to not cancel the function of the second tuner; and

in response to the user selection to not cancel the function of the second

tuner, continuing to perform the function of the second tuner.

87. Nagano’s single-tuner system which, in combination with Alexander’s

two-tuner system, discloses that a user, after receiving a conflict alert, can choose

to cancel the requested action or to proceed with a previously scheduled tuner

operation such as a recording, as taught by Nagano, across two tuners, as taught by

Alexander. For example, Nagano discloses that when “an overlapped information

41

picture is displayed on the monitor as shown in FIG. 17(e), the user can confirm

the list of the overlapped programs,” meaning that if the user wants to go ahead

with the previously scheduled recording operation, the user can choose not to

cancel that recording and instead cancel the newly scheduled, overlapping

recording. Ex. 1104, 11:44-51.

88. Alexander also discloses that the “EPG’s Record Function recognizes

conflicts in viewer record instructions” and the IPG “prompts the viewer to resolve

the conflict.” Ex. 1105, 12:53-55.


combine the conflict recognition and resolution method system of Nagano with the

multi-tuner system and conflict-resolution system of Alexander to provide the user

a simplified means to not cancel his or her prior request thus proceeding with the

tuner function currently in progress. In this case, the user chooses not to cancel the

requested function of the second tuner, and the tuner continues to record or execute

some other tuner function. A PHOSITA would thus have found claims 2 and 14 to

be only a predictable use of prior art elements according to their established

functions.



42

Claims 3 and 15



explain below, in my opinion, Nagano in view of Alexander also discloses a



receiving a user selection to cancel the function of the second

tuner; and in response to the user selection to cancel the function of

the second tuner, canceling the function of the second tuner and

performing the requested tuning operation

. 93. Nagano discloses that “an overlapped information picture is displayed

on the monitor as shown in FIG. 17(e), the user can confirm the list of the

overlapped programs.” Ex. 1104, 11:44-46. Nagano allows “any . . . overlapped

programs to be changed.” Ex. 1104, Abstract. For example, Nagano discloses that

“the picture recorder may be structured so that the picture recording reservation is

corrected on this picture display by operating the cursor moving keys to cancel the

picture recording reservation . . . or delay the picture recording starting time.” Ex.

1104, 11:46-51.

94. As I noted above, while Nagano fails to disclose a second tuner,

Alexander is a two-tuner system and further discloses that the IPG recognizes

recording conflicts and allows the user to reconcile the conflict. Ex. 1105, 12:53-

43

55. Further, Alexander describes a “one occurrence” program selection that

essentially cancels the preexisting, overlapped tuner function in favor of the new

“one occurrence” request when such an overlap is identified. See ¶ 58 above.


combine the conflict recognition and resolution method and system of Nagano with

the multi-tuner system of Alexander to provide the user with improved access and

control of programming content across multiple tuners. In this case, the user

chooses to cancel the current function of the second tuner, and the tuner is allowed

to execute some other tuner function. Again, I note that in the Abstract, Nagano

discloses that the user can modify (i.e., cancel) any overlapped program and this

functionality would not be distinct from a first or a second tuner. In my opinion, a

PHOSITA thus would have found claims 3 and 15 to be only a predictable use of

prior art elements according to their established functions.



Claims 4 and 16





44


wherein the requested tuning operation, the function of the second

tuner, and a function of the first tuner each comprises a tuning

function selected from the group consisting of viewing television

programming, recording television programming, and performing

a secondary tuner function.

99. As I noted above, both Nagano and Alexander teach tuner functions

consisting of viewing and recording television programs. Claims 4 and 16 are

written in a form such that the requirements for a “tuning function” are met by

having the first and second tuners being used to perform either a viewing

operation, a recording operation, or to perform a secondary tuner function. A

secondary tuner function can include a process other than television program

viewing or recording that requires allocation of the first or second tuner, for

example, to collect interactive program guide data, enable Internet browsing, to

play a music channel, or to provide a picture-in-picture signal. Ex. 1101, Fig 3(c).

100. Nagano discloses that a user can select a program for viewing or

recording. Ex. 1104, 1:15-17. Further, while Nagano fails to teach a second tuner,

Alexander does so. Alexander also discloses a PIP secondary tuner function.

Ex. 1105, 3:58-62; Figs. 1 and 5.

101. In my opinion, therefore, it would have been obvious to a PHOSITA

to combine the single-tuner method and system taught by Nagano with the two-

45

tuner and PIP system of Alexander to provide the user with the capability to view

and record increased programming content across multiple tuners. A





Claims 5 and 17


discloses all of the limitations of independent claims 1 and 13 of Ellis. Further, as

I explain below, in my opinion, Nagano in view of Alexander also discloses a



wherein the secondary tuner function comprises a tuning function

selected from the group consisting of providing a picture-in-picture

signal, collecting program guide data, browsing the Internet, and

playing a music channel.

105. As discussed above, secondary tuner functions include a process other

than television program viewing or recording that requires allocation of the first or

second tuner, for example, to collect interactive program guide data, enable

Internet browsing, to play a music channel, or to provide a picture-in-picture

signal. See Ex. 1101, Fig. 3(c). Nagano discloses that “tuner circuit 2 selects

46

channels to which the electronic program guide is inserted in the vertical blanking

time period and outputs the electronic program guide information” thereby

teaching a secondary tuning function. Ex. 1104, 6:34-37. As discussed above,

although Nagano fails to teach a second tuner, Alexander does so. Alexander also

discloses a PIP secondary tuner function. Ex. 1105, 3:58-62; Figs. 1 and 5.

106. It is my opinion that, therefore, it would have been obvious to a

PHOSITA to modify Nagano’s single-tuner system with Alexander’s multi-tuner

and PIP system for the purpose of maximizing a user’s access to additional

programming content. A PHOSITA thus would have found claims 5 and 17 to be

only a predictable use of prior art elements according to their established functions.



Claims 6 and 18






wherein a function of the first tuner is viewing a first television

program, the function of the second tuner is performing a secondary tuner

47

function, and the requested tuning operation is recording a second

television program.

110. As discussed above, Nagano discloses tuner functions that include

viewing and recording programs, but fails to disclose a two-tuner system. See

¶105. Alexander, however, discloses a multi-tuner system with a PIP capability.

See ¶105.

111. Thus, in my opinion, it would have been obvious to a PHOSITA at the

time to combine the method and system of Nagano with Alexander’s multi-tuner

system where the function of the second tuner can be a secondary operation such

as the PIP function disclosed by Alexander, and the new user-requested operation

is recording a program. Such a capability would allow a user to easily cancel or

proceed with a tuner function different from the function currently in progress,

thereby maximizing his or her enjoyment of increased programming content. A





Claims 7 and 19



48





program, the function of the second tuner is recording a second television

program, and the requested tuning operation is performing a secondary

tuner function.

115. As I explained above, “secondary tuner functions” include a process

other than television program viewing or recording that requires allocation of the

first or second tuner to perform, such as collecting interactive program guide data,

enabling Internet browsing, playing a music channel, or providing a picture-in-

picture signal. See Ex. 1101, Fig. 3(c). As I also explained above, Nagano

describes a single-tuner system with a conflict identification capability, wherein

the tuner functions include receiving and viewing a program, recording a program,

and retrieval of EPG data, while Alexander discloses a multi-tuner system, also

with a conflict resolution capability, and a PIP capability.

116. In my opinion, therefore, due to the limited number of possible tuner

functions such as viewing, recording, and PIP, a PHOSITA would have found it

obvious to provide the capability for a user to view a first program with one tuner

while using a second tuner to record a different program, and as that was taking

49

place, the user attempted to perform a secondary tuner function on the tuner

recording the second television program. Having that capability would allow a user

to maximize enjoyment of increased programming content since the user would be

free to activate a PIP feature, as disclosed by Alexander, while viewing the first

program, as an example. Such a capability would also allow a user to maximize

his enjoyment of increased programming content across multiple tuners, as taught

by Alexander. A PHOSITA thus would have found claims 7 and 19 to be only a

predictable use of prior art elements according to their established functions.



Claims 8 and 20








program, and the requested tuning operation is viewing a third television

program.

50

120. As I explained above, Nagano describes a single-tuner system with a

conflict identification capability, wherein the tuner functions include receiving and

viewing a program, recording a program, and retrieval of EPG data. Alexander

discloses a multi-tuner system, with a conflict resolution capability, wherein the

tuning functions include receiving and viewing programs, retrieval of EPG data,

and a picture-in-picture (PIP) capability that will require viewing two television

programs at the same time, one on the main screen and a second within the PIP

window.

121. In my opinion, therefore, due to the limited number of design options

(i.e., tuner functions such as viewing or recording), a PHOSITA at the time would

have found it obvious to combine the method and system of Nagano with the

multiple tuner system described by Alexander to provide the user a simplified

means to cancel or proceed with a different tuner function currently in progress. In

this case, the function of the second tuner is recording a program, and the

requested function is to view a different program. Such a capability would allow a

user to maximize his or her enjoyment of increased programming content. A


prior art elements according to their established functions. Further, IMO a

PHOSITA would choose among a limited number of known and obvious

approaches, such as viewing and recording as disclosed by Nagano and Alexander.

51



Claims 9 and 21






wherein the alert provides the user with the opportunity to direct the

interactive television program guide to cancel the function of the second

tuner when the function of the second tuner is viewing a television

program, and provides the user with the opportunity to direct the

interactive television program guide to cancel a function of the first tuner

when the function of the first tuner is viewing the television program.

125. Claims 9 and 21 require an IPG that can be used to cancel the use of

the first and second tuners to end the viewing of a television program on one or the

other of those tuners. After a careful review of the specification, claims, and file

history of the ’512 patent, I have found no support for the cancellation of a tuner

that is being used to view a television program. Rather, the specification and

drawings of that patent disclose only cancelling the use of a tuner that is being used

52

to provide a recording or a secondary function. The idea of cancelling a tuner

(either the first or second) is only disclosed in claims 9 and 21 themselves.

126. However, in my opinion, given the alert that is disclosed in the ’512

specification, a PHOSITA would readily be able to extend the teachings found

there for an alert for cancelling the use of a tuner to stop a recording or a secondary

function (see, for example, Ex. 1101, Fig. 3(b), Fig. 4(b), and 8:55-10:67), to using

that same alert to offer the user the opportunity to cancel the use of a tuner (either

the first tuner or the second tuner) for viewing a television program as required by

claims 9 and 11. Adding that feature to the alerting method and system of the ’512

patent would not, in my further opinion, be difficult to implement, and would give

the user the option called for in claims 9 and 12. That same addition would also be

easily implemented as an extension of the prior art addressed herein which

discusses cancelling the use of a tuner for recording a program. In fact, both

Nagano and Alexander teach that an IPG can be used to select a program for

viewing, as well as to cancel the viewing of one program by changing to a channel

carrying a different program.

127. In a two-tuner system such as that of Alexander, each tuner is capable

of viewing a program, recording a program, or performing a secondary tuner

function. Thus, due to the limited number of design options, a PHOSITA would

find it an obvious design choice to provide a user the capability to cancel the

53

function of a first or a second tuner when viewing a program. This capability

would simplify a user’s control over viewing content and improve the user’s

viewing experience. Therefore, in my opinion, it would have been obvious to a

PHOSITA at the time to combine the conflict resolution system of Nagano with the

multiple tuner system described by Alexander to provide the user a means to

cancel the viewing function of either the first or second tuner with the IPG. Such a

capability would allow a user to improve control over viewing content and

improve his viewing experience. A PHOSITA thus would have found claims 9

and 21 to be only a predictable use of prior art elements according to their

established functions.



Claims 10 and 22






wherein the displaying the alert comprises displaying a display

screen using the interactive television program guide that provides the user

with a first option to continue to perform the function of the second tuner,

54

and with a second option to cancel the function of the second tuner to

perform the requested tuning operation.

131. These claims describe a situation in which an alert notifies the user

that a conflict exists, and allows the user the option to continue the function of the

tuner, or to cancel the function of the tuner to perform the requested operation.

132. Nagano allows “any of the overlapped programs to be changed.”

Ex. 1104, Abstract. Alexander also discloses that “[t]he EPG will require that the

viewer revise the record instructions to eliminate the conflict.” Ex. 1105, 13:1-3.

At Ex. 1104, 11:44-51, Nagano discloses that the IPG is used to cancel a tuner

function or continue a tuner function by delaying the recording start time.

133. In my opinion, therefore, a PHOSITA would have found it obvious to

modify Nagano’s alert and cancellation system with the two-tuner method and

system of Alexander, to allow a user to: 1) continue a tuner function as taught by

Nagano and Alexander or 2) cancel a requested tuner function such as a recording

as taught by Nagano and Alexander. Such a capability would have simplified the

user’s viewing experience and control over programming content. A





55

Claims 11 and 23






wherein the user selects to cancel the function of the second tuner to

permit the second tuner to perform the requested tuning operation using a

remote control.

137. Nagano discloses that “a picture recording is reserved by the remote

controller.” Ex. 1104, 6:66-67. In my opinion, therefore, it would have been

obvious to a PHOSITA at the time to combine the conflict resolution method and

system of Nagano that includes a remote control to cancel conflicting recordings,

with the two-tuner system described by Alexander, to provide the user a simplified

means to cancel the tuner function currently in progress to proceed with the

requested tuner function. Such a capability would allow a user to maximize his or

her enjoyment of increased programming content. A PHOSITA thus would have

found claims 11 and 23 to be only a predictable use of prior art elements according

to their established functions.

56



Claims 12 and 24






wherein the first tuner and the second tuner are included in a single

device.

141. Nagano fails to disclose a system with two tuners. Alexander

discloses a system that includes “a first television tuner and …. a second television

channel tuned by a second television tuner.” Ex. 1105, 14:37-41.


combine the method and system of Nagano with the two-tuner system of

Alexander so that the tuners could be located in a single device, as taught by

Nagano, resulting in increased user convenience of one device rather than multiple

components that also provides the user with increased programming content. A



57



IX. GROUND 2 – NAGANO IN VIEW OF CHUN RENDER OBVIOUS CLAIMS 1-24 OF ELLIS

144. I have also compared claims 1-24 to the Nagano Patent and Chun

(Ex. 1106). It is my opinion that the Nagano Patent in combination with Chun

discloses each and every limitation of claims 1-24. I address that combination for

each claim on a limitation-by-limitation below.

A. Claims 1 and 13

145. Claim 1 of Ellis is a method claim. Claim 13 of Ellis is a system

claim. As I explain below, in my opinion Nagano in view of Chun disclose a


146. The preamble of claims 1 and 13 read as follows:

A method/system for resolving a conflict when multiple operations

are performed using multiple tuners controlled by an interactive television

program guide, the method/system comprising:

147. As I noted above, it is my opinion that under the broadest reasonable

interpretation, these preambles are not construed to be limitations on claims 1 or 13

because the preambles do not provide an antecedent basis for any claim elements

and the preambles are merely statements of intended use. It is also my opinion that

the preambles of claims 1 and 13 are not limiting because the bodies of claims 1

58

and 13 each describe a structurally complete invention and deletion of the

preambles would not affect the structure or steps of the claimed inventions.

However, Nagano discloses a single-tuner system with an IPG capability that

displays programs on the screen in which a user can select programs for viewing or

recording. Ex. 1104, 1:33-38, Fig. 9A. Chun discloses a system with a first and a

second tuner. Ex. 1106, Abstract; Fig. 6.


to modify the single-tuner system of Nagano with the two-tuner system taught by

Chun to “display plural images on a single television screen” and “to provide a

convenient and easy-to-use menu system.” Ex. 1106, 1:27-31.


a first tuner;

150. As I noted above, Nagano discloses a single tuner system.


a second tuner; and

152. Chun discloses that the “present invention first comprises a first and

second tuner to receive broadcasting signals and to output each of the broadcasting

signals on a channel.” Ex. 1106 at Abstract and Fig. 6. Chun’s two tuners are

highlighted in yellow below:

59


to modify the single-tuner method and system of Nagano with the two-tuner

system taught by Chun to improve a user’s access and control over increased

programming content and to “display plural images on a single television screen.”

Ex. 1106, 1:27-28.


an interactive television program guide implemented on the system,

wherein the interactive television program guide is operative to:

155. Nagano at Ex. 1104, 1:33-38 and Figure 9A (copied below) discloses

an “interactive television program guide” and states that the “program table data is

referred to as electronic program guide” and that the IPG “can be displayed on a

60

screen for individual categories of program …. and on the display of the electronic

program guide on a screen, a user can select a program for receiving and can

reserve for recording of a program.”


receiving a request to perform a tuning operation;

157. It is my opinion, under the broadest reasonable interpretation, that the

preamble is not limiting and this element of claim 1 does not require an IPG. I

note, however, that Nagano discloses that the user can use the IPG to select

programs for viewing and recording. Ex. 1104, 1:33-38; Fig. 9A.


determining that neither a first tuner nor a second tuner are

available to perform the requested tuning operation, wherein the first tuner

and the second tuner are both capable of performing the tuning operation;

61

159. As I noted above, the preamble in claim 1 is not limiting and this

claim limitation does not require an IPG. It is my opinion, however, that a

PHOSITA would understand that Nagano teaches that the IPG can determine if a

tuner is available to perform a function. For example, Nagano discloses an

apparatus and a method for “controlling the recording of television program,”

where “[i]f any of the reserved programs overlap, the apparatus allows the starting

time and/or ending time of any of the overlapped programs to be changed.” Ex.

1104, Abstract. Nagano also explains that the IPG is used to schedule the recording

of a program (a “reservation”), if that program overlaps the recording of a

previously scheduled program, the Nagano system rejects scheduling the new

recording. Ex. 1104, 2:10-17. Nagano fails to disclose a second tuner.

160. Chun, however, discloses a two-tuner system. Chun states that “[t]he

present invention first comprises a first and second tuner to receive broadcasting

signals and to output each of the broadcasting signals on a channel.” Ex. 1106,

Abstract.


to modify the single-tuner method and system of Nagano with the two-tuner

system taught by Chun to provide the user the ability to determine that a tuner is

62

not available to perform a tuning operation as a result of increased programming

content, as well as providing the capability to resolve such a conflict.

162. As I discussed above, Ellis asserted that the prior art only disclosed

“conflicts associated with timers for different programs.” Ex. 1103 at 89. In so

doing, Ellis argued that “checking for such timer related conflicts does not include

determining that neither the first nor the second tuner are available to perform the

requested tuning operation.” Ex. 1103 at 90. While I do not agree with that

assertion, the argument certainly does not apply to Nagano. Nagano expressly

states that an alert is provided when the tuner is not capable of recording

overlapping requests and the user may change any scheduled recording. Ex. 1104,

Abstract; 5:6-12. In addition, Nagano describes overlapping recordings (i.e., a

tuner conflict) which reasonably applies to the present or future, as Nagano makes

no distinction as to when a user can “set” a recording request.


and in response to the determination, displaying an alert that

provides a user with an opportunity to direct the interactive television

program guide to cancel a function of the second tuner to permit the

second tuner to perform the requested tuning operation.

164. Nagano discloses that when programs reserved for recording overlap,

a display is provided for the user and the user may correct any scheduled recording

63

start or end time, or the user may cancel the scheduled recording. Ex. 1104,

Abstract; 11:44-51.

165. Nagano also discloses that the user may cancel or delay the scheduled

recording. Ex. 1104, 11:44-51.

166. Chun discloses that the “present invention first comprises a first and

second tuner to receive broadcasting signals and to output each of the broadcasting

signals on a channel.” Ex. 1106, Abstract; Fig. 6.


modify the IPG enabled conflict-resolution method and system of Nagano to

include the two-tuner method and system of Chun to provide a user improved

access and control of desired programming content over multiple tuners. Given the

nature of Nagano’s conflict-resolution system, in my opinion a PHOSITA would

have thus found claims 1 and 13 to be only a predictable use of prior art elements

according to their established functions. Further, it is my opinion that a PHOSITA

would have found performing functions such as determining a conflict, providing

an alert, or canceling a tuner function for a second tuner, to be obvious in view of

Nagano’s teachings for a single (i.e., first) tuner. Applying such techniques to a

second tuner would yield predictable results.


view of Chun invalidates claims 1 and 13 of Ellis through obviousness.

64

B. Claims 2 and 14

169. I explained above my opinion that Nagano in view of Chun discloses

all of the limitations of independent claims 1 and 13 of Ellis. Further, as I explain

below, in my opinion Nagano in view of Chun also discloses a method and system

having all of the limitations of claims 2 and 14 of Ellis.


receiving a user selection to not cancel the function of the second

tuner; and in response to the user selection to not cancel the function of the

second tuner, continuing to perform the function of the second tuner.

171. Nagano discloses that “an overlapped information picture is displayed


overlapped programs.” Ex. 1104, 11:44-46. Nagano also discloses that “the picture

recorder may be structured so that the picture recording reservation is corrected on

this picture display by operating the cursor moving keys to cancel the picture

recording reservation …. or delay the picture recording starting time.” Ex. 1104,

11:46-51. A PHOSITA would understand that by choosing to delay the recording,

the user chooses to continue the current tuner function. Nagano, however, fails to

disclose a second tuner.

172. Chun discloses a system that includes a first and a second tuner. Ex.

1106, Abstract.

65


to combine the conflict recognition and resolution method and system of Nagano

with the multi-tuner system of Chun to provide the user with improved access and

control over programming content with a simplified means to cancel or proceed

with a different tuner function currently in progress. In this case, if the user

chooses not to cancel the requested function of the second tuner, the tuner is

allowed to record or execute some other tuner function. A PHOSITA thus would

have found claims 2 and 14 to be only a predictable use of prior art elements

according to their established functions.


view of Chun invalidates claims 2 and 12 of Ellis through obviousness

C. Claims 3 and 15






receiving a user selection to cancel the function of the second tuner;

and in response to the user selection to cancel the function of the second

tuner, canceling the function of the second tuner and performing the

requested tuning operation.

66

177. Nagano discloses that “an overlapped information picture is displayed


overlapped programs.” Ex. 1104, 11:44-46. Nagano allows “any …. overlapped

programs to be changed.” Ex. 1104, Abstract. For example, Nagano discloses that

“the picture recorder may be structured so that the picture recording reservation is

corrected on this picture display by operating the cursor moving keys to cancel the

picture recording reservation …. or delay the picture recording starting time.”

Ex. 1104, 11:46-51. Again, Nagano is a single-tuner system.

178. Chun discloses a system that includes a first and a second tuner. Ex.

1106, Abstract.

179. In my opinion, therefore it would have been obvious to a PHOSITA to

combine the conflict recognition and resolution method and system of Nagano with

the multi-tuner system of Chun to provide the user a simplified means to cancel or

proceed with a different tuner function currently in progress. In this case, the user

chooses to cancel the current function of the second tuner, and the tuner is allowed

to execute some other tuner function. A PHOSITA thus would have found claims

3 and 15 to be only a predictable use of prior art elements according to their


67



D. Claims 4 and 16






wherein the requested tuning operation, the function of the second

tuner, and a function of the first tuner each comprises a tuning function

selected from the group consisting of viewing television programming,

recording television programming, and performing a secondary tuner

function.

183. As I noted above, claims 4 and 16 are written in a form such that the

requirements for a “tuning function” are met by having the first and second tuners

being used to perform either a viewing operation, a recording operation, or to

perform a secondary tuner function. A secondary tuner function can include a

process other than television program viewing or recording that requires allocation

of the first or second tuner, for example, to collect interactive program guide data,

enable Internet browsing, to play a music channel, or to provide a picture-in-

picture signal. See Ex. 1101, Fig 3(c). Nagano discloses that a “user selects a

68

preferred program on the channel and watches the program on a TV set or records

the program on a picture recorder.” Ex. 1104, 1:15-17. Further, while Nagano fails

to teach a second tuner, Chun does so. Chun discloses that the “[m]ulti-channel

mode can work on the PIP system with either tuner 1 or tuner 2.” Ex. 1106, 2:37-

38.


to combine the conflict recognition and resolution method and system of Nagano

with the multi-tuner and PIP system of Chun to provide the user increased access

to additional programming content. A PHOSITA thus would have found claims 4





E. Claims 5 and 17






69

wherein the secondary tuner function comprises a tuning function

selected from the group consisting of providing a picture-in-picture signal,

collecting program guide data, browsing the Internet, and playing a music

channel.

188. As described above, Nagano fails to disclose a two-tuner system.

Chun, however, describes a two-tuner system with a secondary tuner function of

PIP. Chun states that the “[m]ulti-channel mode can work on the PIP system with

either tuner 1 or tuner 2.” Ex. 1106, 2:37-38.


to modify Nagano’s single-tuner system with Chun’s two-tuner and PIP system for

the purpose of maximizing a user’s control over additional programming content.

A PHOSITA thus would have found claims 5 and 17 to be only a predictable use

of prior art elements according to their established functions.



F. Claims 6 and 18






70


program, the function of the second tuner is performing a secondary tuner

function, and the requested tuning operation is recording a second

television program.

193. As I explained above, Nagano fails to describe a two-tuner system.

194. Chun, however, describes a two-tuner system with a PIP capability (a

“secondary tuner function”) with either tuner. Ex. 1106, 2:37-38.


at the time to combine the method and system of Nagano with Chun’s multi-tuner

system where the function of the second tuner can be a secondary operation such

as the PIP function disclosed by Chun, and the new user-requested operation is

recording a program. Such a capability would allow a user to easily cancel or

proceed with a tuner function different from the function currently in progress,

thereby maximizing his or her enjoyment of increased programming content. A





G. Claims 7 and 19



71






program, and the requested tuning operation is performing a secondary

tuner function.

199. As discussed above, Nagano describes a single-tuner system with a


viewing a program, recording a program, and retrieval of EPG data.

200. Chun discloses a system that includes a first and second tuner. Ex.

1106, Abstract. Chun also discloses a secondary tuner function (PIP) capability

that can work with either the first or second tuner. Ex. 1106, 2:37-38.

201. In my opinion, therefore, due to the limited number of possible tuner

functions, a PHOSITA would have found it obvious to provide the capability for a

user to view a first program with one tuner while using a second tuner to record a

different program, and as that was taking place, the user attempted to perform a

secondary tuner function on the tuner recording the second television program.

Having that capability would allow a user to maximize enjoyment of increased

programming content since they would be free to activate a PIP feature, as

72

disclosed by Chun, while viewing the first program, as an example. Such a

capability would also allow a user to maximize their enjoyment of increased

programming content across multiple tuners, as taught by Chun. A PHOSITA thus

would have found claims 7 and 19 to be only a predictable use of prior art elements

according to their established functions.



H. Claims 8 and 20








program, and the requested tuning operation is viewing a third television

program.

205. As discussed above, Nagano discloses a single-tuner system, with a


viewing a program, recording a program, and retrieval of EPG data.

73

206. Chun discloses a multi-tuner system that includes a picture-in-picture

(PIP) capability that will require viewing two television programs at the same time.

Ex. 1106, Abstract; 2:37-38.

207. In my opinion, therefore, since there are only a limited number of

tuner functions, such as viewing or recording, a PHOSITA at the time would have

found it obvious to combine the method and system of Nagano with the multiple

tuner system described by Chun to provide the user a simplified means to cancel or

proceed with a different tuner function currently in progress. In this case, the

function of the second tuner is recording a program, and the requested function is

to view a different program. Such a capability would provide a user with increased

access to programming content. A PHOSITA thus would have found claims 8


established functions. Further, such a PHOSITA would choose among a limited

number of known and obvious approaches such as viewing and recording, as

disclosed by Nagano and Chun.



I. Claims 9 and 21



74




wherein the alert provides the user with the opportunity to direct the

interactive television program guide to cancel the function of the second

tuner when the function of the second tuner is viewing a television

program, and provides the user with the opportunity to direct the

interactive television program guide to cancel a function of the first tuner

when the function of the first tuner is viewing the television program.

211. As I noted above claims 9 and 21 require an IPG that can be used to

cancel the use of the first and second tuners to end the viewing of a television

program on one or the other of those tuners. After a careful review of the

specification, claims, and file history of the ’512 patent, I have found no support

for the cancellation of a tuner that is being used to view a television

program. Rather, the specification and drawings of that patent disclose only

cancelling the use of a tuner that is being used to provide a recording or a

secondary function. The idea of cancelling a tuner (either the first or second) is

only disclosed in claims 9 and 21 themselves.

212. However, in my opinion, given the alert that is disclosed in the ’512

specification, I believe that a PHOSITA would readily be able to extend the

teachings found there for an alert for cancelling the use of a tuner to stop a

75

recording or a secondary function (see, for example, Ex. 1101, Fig. 3(b), Fig. 4(b),

and 8:55-10:67), to using that same alert to offer the user the opportunity to cancel

the use of a tuner (either the first tuner or the second tuner) for viewing a television

program as required by claims 9 and 11. Adding that feature to the alerting system

of the ’512 patent would not, in my further opinion, be difficult to implement, and

would give the systems user the option called for in claims 9 and 21. That same

addition would also be easily implemented as an extension of the prior art

addressed herein.

213. Nagano discloses an IPG which can be used to select a program for

viewing, as well as to cancel the viewing of one program by changing the channel

that is selected or by programming the recording of a program.

214. Although Nagano is only a single-tuner system, Chun discloses a

system that includes a first and a second tuner. Ex. 1106, Abstract.

215. As I explained above, Nagano describes a single-tuner system, with a


viewing a program, recording a program, and retrieval of EPG data. Chun

discloses a multi-tuner system with a conflict resolution capability with a tuning

function that includes a picture-in-picture (PIP) capability.

216. In a two-tuner system such as that of Chun, each tuner is capable of

viewing a program, recording a program, or performing a secondary tuner

76

function. Thus, due to the limited number of design options, a PHOSITA would

find it an obvious design choice to provide a user the capability to cancel the

function of a first or a second tuner when viewing a program. This capability

would simplify a user’s control over viewing content and improve the user’s

viewing experience. Therefore, in my opinion, it would have been obvious to a

PHOSITA at the time to combine the conflict resolution system of Nagano with the

two-tuner system described by Chun to provide the user a means to cancel the

viewing function of either the first or second tuner with the IPG. Such a capability

would allow a user to improve control over viewing content and improve his or her

viewing experience. A PHOSITA thus would have found claims 9 and 21 to be




J. Claims 10 and 22






77

wherein the displaying the alert comprises displaying a display

screen using the interactive television program guide that provides the user

with a first option to continue to perform the function of the second tuner,

and with a second option to cancel the function of the second tuner to

perform the requested tuning operation.

220. These claims describe a situation in which an alert notifies the user

that a conflict exists, allowing the user the option to continue the function of the

tuner, or allows the user to cancel the function of the tuner to perform the

requested operation. Nagano allows “any of the overlapped programs to be

changed.” Ex. 1104, Abstract. Nagano also discloses that the IPG is used to

cancel a tuner function or continue a tuner function by delaying the recording start

time. Ex. 1104, 11:44-51. Nagano fails to disclose a second tuner.

221. Chun, however, discloses a system that includes “a first and second

tuner to receive broadcasting signals and to output each of the broadcasting signals

on a channel.” Ex. 1106, Abstract.


modify Nagano’s alert and cancellation system with the two-tuner system of Chun,

to allow a user to: 1) continue a tuner function as taught by Nagano or 2) cancel a

requested tuner function such as a recording as taught by Nagano. Such a

capability would have simplified the user’s viewing experience and control over

78

programming content. A PHOSITA thus would have found claims 10 and 22 to be




K. Claims 11 and 23






wherein the user selects to cancel the function of the second tuner to

permit the second tuner to perform the requested tuning operation using a

remote control.

226. Nagano discloses that “a picture recording is reserved by the remote

controller.” Ex. 1104, 6:66-67. Nagano also discloses that the user can adjust the

time of a scheduled recording to eliminate a conflict, but fails to disclose a second

tuner. Ex. 1104, 11:19-29.

227. Chun discloses a system that includes “a first and second tuner to

receive broadcasting signals and to output each of the broadcasting signals on a

channel.” Ex. 1106, Abstract. Chun also discloses “[a] menu-type multi-channel

79

system, comprising: means for receiving a command signal representative of one

of a multi-screen signal and a page up/down signal from one of a keypad and a

remote controller.” Ex. 1106, Claim 8.


at the time to combine the conflict resolution method and system of Nagano that

includes a remote capability to cancel a tuner function, with the two-tuner system

described by Chun to provide the user an enhanced means to control programming

content and increase a user’s convenience. A PHOSITA thus would have found

claims 11 and 23 to be only a predictable use of prior art elements according to

their established functions.



L. Claims 12 and 24






wherein the first tuner and the second tuner are included in a single

device.

80

232. Nagano fails to disclose a system with two tuners. However, Chun

discloses a single device with a first and a second tuner. Chun discloses that “a

first and second tuner to receive broadcasting signals and to output each of the

broadcasting signals on a channel.” Ex. 1106, Abstract; Fig. 6.

233. In my opinion, therefore, a PHOSITA would find it obvious to

combine the single tuner method and system of Nagano with the multi-tuner

system described by Chun for the purpose of providing a user increased

convenience and access to greater programming content via a single device. A





X. CONCLUSION

235. After reviewing the prior art discussed herein and the claims of Ellis,

it is my opinion that PHOSITA would understand that the combinations of prior art

discussed above render claims 1-24 of Ellis invalid as being obviousness over that

art.

XI. SIGNATURE

236. I hereby declare under penalty of perjury that all statements made in

this Declaration of my own personal knowledge are true and that all statements

81

made on information and belief are believed to be true; and further that these

statements are made with the knowledge that willful false statements and the like

are punishable by fine, imprisonment, or both, under Section 1001 of Title 18 of

the U.S. Code.

Executed on January 30, 2017

82

Appendix A

Curriculum Vitae and Publications VERNON THOMAS (TOM) RHYNE, III 8407 Horse Mountain Cove Austin, TX 78759-6828 Phone and FAX: (512) 219-0849 E-Mail: [email protected] or [email protected]

BIOGRAPHICAL DATA

Birthdate: February 18, 1942

Citizenship: USA

Married: Glenda Pevey Rhyne

Children: Amber Rhyne Compton and Vernon Thomas Rhyne, IV

Grandchildren: Truett Rhyne Compton and Tate James Compton

Security Clearance: Department of Defense Secret (Inactive)

PROFESSIONAL INTERESTS

Microprocessor/Microcomputer Design and Application

Computer-Aided Design

Computer Architecture

Digital Systems Design and Synthesis

Digital Communications

Electronic Circuit Design

Semiconductor Manufacture

Technology Maturation and Commercialization

Intellectual Property Litigation EDUCATION

Ph.D. (Electrical Engineering) — Georgia Institute of Technology, 1967.

M.E.E. — University of Virginia, 1964.

B.S.E.E. (Special Honors) — Mississippi State University, 1962.

Japanese Language Instruction, 1988-89, 1996, 1997.

83

Modern Semiconductor Manufacturing, Motorola University, 1996. WORK EXPERIENCE Industrial and Research:

1997-Present: Retired from Texas A&M University; part-time engineering consultant.

1995-1997: Manager of Strategic Programs, Strategic Asset Group, Semiconductor Products Sector, Motorola, Inc., Austin, TX. Responsible for technology transfer negotiations and management of joint ventures with strategic partners.

1994-1995: Vice President, Research and Development, Information Systems Division, Microelectronics and Computer Technology Corporation (MCC). Responsible for MCC R&D in neural network applications, data mining, software interface standardization, and other advanced software development projects.

1991-1994: Director, MCC ATLAS Standards Laboratories. Responsible for definition and testing of CAD framework and interfaces in support of the CAD Framework Initiative, Inc.

1989-1991: Manager, CAD Framework Laboratory, MCC CAD Program. Responsible for definition and testing of CAD framework and interfaces.

1988-1989: Manager, Systems Engineering Group, MCC CAD Program, 1988. Responsible for alpha testing of MCC CAD System.

1986-1989: Deputy Director, MCC CAD Program. Responsible for general program administration.

1983-1986: Director, Systems Technology Laboratory, MCC CAD Program, Austin, TX. Responsible for development of supporting technologies for MCC CAD System including distributed databases, natural-language interface, and rule-based design management.

1962-1965: Aerospace Technologist, Analysis and Computer Technology Division, NASA Langley Research Center, VA

1965-1967: System Engineer (Part-Time), Lockheed-Georgia Research Center, Marietta, GA.

1961: Summer Intern, Union Carbide Corporation, Texas City, TX.

Academic:

84

Senior Lecturer in Electrical/Computer Engineering, University of Texas at Austin, 1984-1994.

Adjunct Faculty Member, Department of Electrical and Computer Engineering, Carnegie-Mellon University, 1986-1992.

University/SRC Coordinator, MCC CAD Program, 1988-1990; SRC Design Sciences Advisory Committee, 1989-1990.

Professor, Electrical Engineering, Texas A&M University 1974-1986 (on leave to MCC during 1983-86).

Coordinator of Computing, Texas AM University, 1982-1983.

Director, Digital Systems Laboratory, Department of Electrical Engineering, Texas A&M University, 1978-1983.

Associate Professor, Electrical Engineering, Texas A&M University, 1969-1974.

Assistant Professor, Electrical Engineering, Texas A&M University, 1967-1969.

Instructor, Electrical Engineering, Georgia Institute of Technology, 1965-1967.

Lecturer, Computer Systems, George Washington University Extension, 1964.

Consulting:

Consultant to a number of companies and law firms re intellectual property litigation, 1978-present (part-time).

Consultant to the Electric Power Research Institute, including serving as technical project manager on the EPRI/DOE Distribution Automation Project, 1979-1983.

Consulting engineer to a variety of national and international industries dealing with microelectronics and computer design. Clients have included Texas Instruments, Control Data Corporation, AMD, ETA, and Signetics.

Consulting engineer to a variety of clients dealing with computer systems for satellite navigation. Clients have included Texas Instruments, Gould, Matsushita, ITE-Europe, and the Federal Republic of Germany.

Invited member of NASA Shuttle-GPS Advisory Panel and EPRI/DOE Distribution Automation Research Review Panel, 1979-1981.

85

Consultant to U.S. Coast Guard, developing on-line data acquisition system for shipboard navigation data and off-line data processing/analysis systems, 1979-1982.

Principal investigator on research projects dealing with automated Boolean minimization, high-speed computer arithmetic, bit-serial processing, special-purpose VLSI architectures, marine navigation systems, and computer-aided design of digital systems, 1967-83.

OTHER PROFESSIONAL ACTIVITIES

Member, Panel on Assessment, Electrical and Electronics Engineering Laboratory, U.S. National Institute for Standards and Technology, 1993 to 1999; Panel Chair, 1996-99. (Appointed by National Research Council)

Planning Committee, 1997 Workshop for National Technology Roadmap for Semiconductors, SIA.

Member, Technical Working Group (TWIG) on Semiconductor Manufacture, SIA, 1995-97.

Secretary, Board of Directors of White Oak Semiconductor, Inc., Richmond, VA, 1996-97.

Executive Secretary, Board of Directors of the Tohoku Semiconductor Corporation, Sendai, Japan, 1996-97.

Board of Directors Alternate, Semiconductor Research Corporation, representing Motorola, 1995-96.

Roadmap Coordinating Committee, Semiconductor Industries Association, 1995.

Book reviewer, American Scientist, 1993.

Reviewer for State-funded research proposals in microelectronics, computer science, and computer engineering, Texas Higher Education Coordinating Board, 1993.

Visitor for Accreditation Board for Engineering and Technology, accrediting undergraduate programs in Computer Science, Computer Engineering and Electrical Engineering, 1981-1983, 1991-92, 1997-present.

Chair for nine U.S. engineering program accreditation teams, 1984-90, including the accreditation teams for the University of California at Berkeley (1988) and the University of Illinois (1989).

86

Advisor, Texas State Board of Education (1985), Texas State Coordinating Board for Higher Education (1987).

Consultant on international engineering accreditation, Kuwait University College of Engineering and Petroleum (1990 and 1992), Korean Institute for Advanced Science and Technology (1993), Bilkent University, Ankara, Turkey (1995), University of the United Arab Emirates (1998), ITESM, Querétaro, Mexico (1999), Kyoto University, Japan (2000), Ritsumeikan University, Japan (2000), Mapua Institute of Technology, Manila (2004).

Consultant on engineering accreditation to the Japan Accreditation Board for Engineering Accreditation, 2000-2004.

Advisor to the Washington Accord on International Engineering Accreditation, 2003-04.

Consultant on engineering education and long-range planning, George Washington School of Engineering and Applied Science, 1990 and 1993-94.

PROFESSIONAL LICENSES

Registered Professional Engineer, Texas, No. 28,728.

Registered Patent Agent, No. 45,041.

Pilot (Single-Engine Land).

PROFESSIONAL AND HONORARY SOCIETY MEMBERSHIPS

Professional Societies:

Member, Institute of Electrical and Electronics Engineers, 1963-present.

IEEE Treasurer, 1994 and 1995.

IEEE Board of Directors, 1991-1995.

IEEE Executive Committee, 1993-1995.

IEEE Board of Directors, Division VIII Director, 1993, Division VI Director, 1991-1992.

IEEE Technical Activities Board, 1991-93.

IEEE Employee Benefits Committee, Member, 1991 to 1999, Chair, 1997, 1998.

IEEE Computer Society, 1964 to present.

IEEE Computer Society Board of Governors, 1985.

87

IEEE Computer Society Executive Committee, 1993.

Accreditation Board for Engineering and Technology, 1994 to 1999, representing IEEE.

Honorary Societies:

Upsilon Pi Epsilon (Computer Science).

Eta Kappa Nu (Electrical Engineering).

Tau Beta Pi (Engineering).

Phi Kappa Phi (Scholarship).

Sigma Xi (Research).

Other Honors:

The Contemporary Who’s Who, 2003.

Strathmore’s Who’s Who, 2000-present.

IEEE Millennium Award, 2000.

Golden Core Award, IEEE Computer Society, 1996.

Fellow of the Accreditation Board for Engineering and Technology, 1992.

Outstanding Engineering Graduate, Mississippi State University, 1992.

IEEE Educational Activities Board Award for Meritorious Achievement in Accreditation Activities, 1991.

Who’s Who in America, 1991-present.

Who’s Who in Engineering, 1991-present.

Elected as an IEEE Fellow for “contributions to computer engineering and the computer engineering profession,” 1990.

F. E. Terman Award (Outstanding Young Electrical Engineering Educator in U.S.), American Society for Engineering Education, 1980.

Outstanding Young Engineer (Honorable Mention), National Society of Professional Engineers, 1974.

Young Engineer of the Year, State of Texas, Texas Society of Professional Engineers, 1973.

Outstanding Faculty Member, Texas A&M University Student Engineers Council Award, 1973.

88

General Dynamics Award for Excellence in Engineering Teaching, 1972.

American Men and Women of Science.

COMMITTEE MEMBERSHIPS

Professional:

Technical Program Chair for 1992 IFIPS Workshop on Electronic CAD Design Environments, March 23-25, 1992, Paderborn, Germany.

Chair, ISO TC184/SC4-IEC TC3 Joint Working Group (JWG9) for Electrical/Electronic Product Data Exchange, 1991-1993.

DARPA Principal Investigators Advisory Panel, Information Systems Technology, 1990-1994

Review team member for academic and research programs in microelectronics at the Microelectronics Research Center, Iowa State University, 1989.

CAD Framework Initiative: Interim Steering Committee, 1988-1989; Board of Directors, 1989-1992; Treasurer, 1989-1992; Chair, Technical Coordinating Committee, 1989-1990.

Member, IEC TC3, WG11, 1990-1991.

Member, Working Group 2, IEC Technical Committee TC3, and IEEE SCC 11.9, developing IEEE Standard 91-1984, “Explanation of Logic Symbols,” 1982-1985.

Civic:

Elected to Eanes Independent School District Board of Trustees, 1986-1997; President, 1987-1990, 1996-97.

Texas Association of School Boards Finance Committee, 1989-1994; Tax Restructuring Committee, 1990.

Citizens Advisory Committee, Westlake Picayune, 1988-90.

Advisory Committee for Electric Power Distribution, City of West Lake Hills, 1987-1990.

Capital Area Easter Seal Rehabilitation Center Advisory Board, 1985-1986, Telethon Committee, 1986.

Publications

Books, Contributions to Books, Published Notes, and Standards:

89

Electronic Design Automation Frameworks—When Will the Promise Be Realized?, North-Holland, Amsterdam, 1992 (editor and contributor).

ISO 10303 Standard for Product Data Exchange, Parts 103 (Electrical Interconnectivity), 212 (Electrotechnical Plants), 210 (Printed Circuit Assembly Design and Manufacture), and 211 (PCA Test and Logistics); editor and technical contributor, 1991-1993.

“An Introduction to CAD Framework Technology,” Published notes for DAC Tutorial, 1991 Design Automation Conference, June 21, 1991.

“NAVSTAR Global Position System, A User’s Approach to Understanding,” published notes for IEEE Continuing Education Course No. 1125 (1982), with P. S. Noe and J. H. Painter.

Traffic Control Systems Handbook, Chapter 8, “Communications Concepts,” Federal Highway Administration, 1976.

Fundamentals of Digital Systems Design, Prentice-Hall, 1973.

“Supplementary Information for Computer Engineering Program Evaluators,” IEEE Manual for Program Evaluators on EAC Accreditation Teams, IEEE Educational Activities Board, May 1987.

“ABET/EAC Program Criteria for Computer Engineering and Similarly Named Engineering Programs,” contributor, 1985-87.

“Graphic Symbols for Logic Devices,” ANSI/IEEE Standard 91-1982, (co-author), IEEE Standards Office, New York, March 1982.

“The NAVSTAR Global Positioning System, A User’s Approach to Understanding.” Produced by ALTAIR Corp., College Station, Texas. With P.S. Noe and John H. Painter. 1979 to 1985.

in the united states p t o b t p comcast cable ... · honorary societies: upsilon pi epsilon...

Documents